The Super Bowl, the Dannon Yoghurt Commercial and John Butler Trio

Not that we actually made the effort to watch the 2012 Super Bowl (the apex of a competition sport akin to rugby but played by players wearing padding, though which sounds to us more like a restaurant which you might find down the Central Station end of Sussex Street), but we have had a look at some of the controversy surrounding the event - and no we don''t mean Madonna; it''s to do with a yoghurt ad and copyright, possible copyright infringement and a number of other statutory breaches and common law intransigences. The advertisement is directly below, and directly below that is a video of the song Zebra to which the riff in the advertisement some may think has more than a passing resemblance.

We may not be musos, but we think it is certainly arguable that John Butler Trio have a case. You can judge for yourself by clicking on the play button on the vid clips below. One thing is for sure there is definitely going to be a lot of publicity to come out of this and that in itself cannot be a bad thing.

A question about the music in our Super Bowl commercial has been brought to our attention. We are working to fully understand and address the situation. We apologize for any concerns this has caused John Butler Trio''s band members and fans.

Thank you everyone for making us aware of the Oikos Greek yogurt TV ad that aired during the Super Bowl yesterday featuring a song that sounds extremely similar to Zebra. John Butler and his management were not aware of this usage until yesterday, and we will be seeking advice as how to address the issue. JBT MGMT

So what are the legal issues and potential remedies?

Copyright in a song and infringement

Copyright exists in the written form, that is literary works such as song lyrics, but in the advertisement above no words are used (thereby allowing a very wide audience reach) so that would not apply in the circumstances before us. However, copyright also exists in musical works separately from any lyrics. As one might expect, only the copyright owner of the work has the exclusive right to publish, perform, broadcast, transmit (including on the Internet) or make an adaptation of that work.

Sound recordings are also protected in Australia by the Copyright Act 1968 (Cth). They are not offered protection as artistic works as such, but are included in Pt IV of the Act as "subject matter other than works". It is difficult to tell whether there has been a breach of this protection in itself by for example sampling or whether it has been reworked. Whether it has or not should not be too long coming to light.

The Australian Copyright Act provides that a person infringes another person''s intellectual property (breaches the Copyright Act) when that person, not being the copyright owner and without a copyright licence, does, or authorises to be done any act comprised in the copyright (unless such an act falls within one of the statutory exceptions).

It is well established that an infringing act does not need to be done in relation to the whole of the work or other subject-matter. It is sufficient to constitute an infringement if an act is done to a substantial part of the work. As a corollary of that non-substantial copying is a lawful use. Section 14(1)(a) of the Copyright Act provides that a reference to the doing of an act in relation to a work or other subject-matter includes a reference to the doing of that act in relation to a substantial part of the work or other subject-matter. Section 14(1)(b) provides that a reference to the reproduction, adaptation or a copy of a work, includes a reproduction, adaptation or copy of a substantial part of the work.

It is apparent that the music in the advertisement that is arguably similar to the song Zebra is just a few seconds long. That does not mean that a court would consider those few seconds non-substantial. Not surprisingly the Copyright Act does not define the term ''substantial.'' Determining what is substantial is often one of the major difficulties in a copyright infringement action and whether the defendant has infringed a substantial part of a plaintiff''s work. The courts have laid out guidance in a number of cases.

As long ago as the 1830s it was observed that quantity does not provide much assistance. Lord Cottenham observed2:

When it comes to a question of quantity it must be very vague. One writer might take all the vital part of anotherâ€™s book, though it might be but a small proportion of the book in quantity. It is not only quantity, but value that is always looked to. It is useless to refer to any particular cases as to the quantity.

[t]he question whether there has been a reproduction is a question of fact and degree depending on the circumstances of each case. The emphasis upon quality rather than quantity directs attention to the significance of what is taken.

"It is certainly not necessary, to constitute an invasion of copyright, that the whole of the work should be copied, or even a large portion of it, in form or in substance. If so much is taken, that the value of the original is sensibly diminished, or the labors of the original author are substantially to an injurious extent appropriated by another, that is sufficient, in point of law, to constitute a piracy pro tanto. ... Neither does it necessarily depend upon the quantity taken ... [i]t is often affected by other considerations, the value of the materials taken, and the importance of it to the sale of the original work. ... In short, we must often, in deciding questions of this sort, look to the nature and objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work."

Finkelstein J continued in the following paragraph (16) to give a succinct summation of the most authoritative cases:

The effect of the authorities seems to be this. The test of substantiality 'that is the notion of quality' is not confined to an examination of the intrinsic elements of the plaintiff's work. The test of substantiality may involve a broader enquiry, an enquiry which encompasses the context of the taking. The key ideas here are first that copyright is granted to protect the owner's financial interest in his property. The second idea links financial harm to the rationale of unfair use or the injurious appropriation of the plaintiff's skill and labour. The level of financial harm may indicate that the use of that labour is unfair. In Blackie & Sons Limited v The Lothian Book Publishing Company Proprietary Limited [1921] HCA 27; (1921) 29 CLR 396 Starke J (at 402-403) said that the question was "[whether] the defendant, to use the words of the statute, reproduced a substantial part of the plaintiff's book...or...has an unfair or undue use been made of the work protected by copyright?" One of the factors upon which Starke J relied to conclude (at 403) that the defendant "[appropriated] a substantial and valuable portion" of the plaintiff's work was that the defendant's books were intended to be, and were, in direct competition with the plaintiff's. The third idea draws on the paradigm of piracy. The "clear case" of copyright infringement is where the defendant sells a cheaper version of the plaintiffâ€™s work, causing the plaintiff financial harm. The fourth idea is the concept of "value", which denotes more fully than the word "quality" a financial dimension as well as the notion of originality or artistic merit.

At paragraph 28 of the decision Finkelstein J goes on to give some clear guidance to copyright holders (and their advocates) about how they should go about trying to determine whether or not they have an arguable case for an infringement of copyright. It is reproduced below (with the distracting authorities removed) along with the paragraph that follows in the decision for no reason other than it displays how an Australian judge manages to convey an appreciation of modern art, in this instance a couple of Warhol's films (and no not the more well known screen tests), and weave it into a legal analysis of statutory interpretation and judicial thinking going back over 200 years to the time of the ''First French Empire'' when Napoleon was setting Europe on fire and stoking the flames of nationalism in various countries. Enjoy.

28 It is now clear that the starting point for any enquiry into substantiality is not, as the judge would have it, "primarily quantitative". Nor is the principal enquiry whether harm has been caused to the plaintiff's commercial interests. The first thing that must be done is to look at the part taken, compare it with the copyright work and ask whether it is possible to conclude from that comparison whether that part is a "substantial part" of the plaintiffâ€™s programme. The question will often boil down to one of the following (dependent on the type of programme): Does what has been taken amount to "essentially the heart" of the copyrighted work? Is what has been taken "the essential part of the copyright work?" Is what has been taken "at least an important ingredient" of the copyright work? Have the best scenes been taken from the programme? Are the excerpts "highlights" from the programme? Are the excerpts central to the programme in which it appeared? Does the portion used "constitute the 'heart' the most valuable and pertinent portion of the copyright material?"

29 If what has been taken does not meet any of those descriptions that will often be the end of the enquiry. There will, however, be borderline cases where an enquiry based on a visual comparison will not yield a result. Take as an example a programme that has no "core" or "heart". Here I have in mind two cinematograph films by the 1960s icon Andy Warhol. The films are "Sleep" and "Empire", films that few people have seen. "Sleep" has been described as "one of the most famous of unseen films": F Camper, "The Loverâ€™s Gaze", Chicago Reader Movie Review, section 1, 28 April, 2000. It is a six-hour (some say longer) film taken by a stationary 16 mm camera of a man sleeping. The reviewer Jonas Mekas writing in the Village Voice (September, 1963) queried whether the film was: "An exercise in hypnosis? Test of patience? A Zen joke?" Empire is a single shot from late dusk to early morning of the Empire State Building taken from the 44th floor of the Time-Life Building. Mr Koch described Empire as "the most profoundly mute motion picture ever filmed": S Koch, Stargazer: Andy Warhol's World and His Films (2nd ed, M Boyars, New York, 1985) at 60. The film has no plot and only two things happen. The sun moves through the sky and, at dusk, floodlights are turned on to illuminate the upper floors of the Empire State Building. If part of "Sleep" or "Empire" is taken, no amount of visual comparison would enable a tribunal to determine whether that part is a substantial part of the film. It would be necessary to consider factors such as the plaintiff's financial interest as well as the defendant's purpose to resolve the issue.

Passing Off

The tort of passing off, a common law as opposed to a statutory remedy, occurs where a person or other entity makes a misrepresentation about goods and services being those of another person or entity and damage results or is likely to result to that other person''s goodwill or reputation as a result of the misrepresentations. Passing off may be considered as a forerunner of the the statutory system of trade mark protection. It was originally quite narrow in scope, applying to products and business names, but has expanded over the years to encompass a whole range of images and associated look and feel or get up of a company and its products.

However, that said the courts consider the tort of passing off is not so easily defined. A generally well regarded starting point are the five elements identified by Diplock J in what is known as the Advocaat CaseErven Warnick BV v. J Townend & Sons Hull Ltd [1980] RPC 31. Those elements are:

Misrepresentation

Made by a trader in the course of trade

To prospective customers of his or ultimate consumers of goods or services supplied by him

Calculated to injure the business or goodwill of another trader "reasonably foreseeable consequence".

Which causes actual damage to a business or goodwill or will probably do so.

In the Advocaat Case, Townend started selling egg flip (also known as eggnog) which it successfully marketed as Old English Advocaat. The Dutch firm Erven's had been selling advocaat in the UK since 1911. The UK market accounted for about 76% of their sales. Erven managed to prove in trial that the public believed the UK product was the same as the Dutch product. Diplock J found that ultimately the product was being passed off as something it was not but someone else's product was:

Name advocaat recognised as a distinct beverage

Appellant's product known and recognised under that name and had goodwill attached

Egg flip was not the same thing

Public were induced to believe they were buying advocaat when they weren't

Misrepresentation had caused harm: loss of sales; debasement of name and reputation of advocaat.

Quite clearly the elements in the Advocaat Case would not apply to the facts as far as we know them in this instance. It doesn''t quite end there though for the tort of passing off, because although the Advocaat Case was referred to favourably by Deanne J in the Australian High Court in Moorgate Tobacco Co. Ltd v Philip Morris Ltd (1984) later cases (such as Conagra v McCain which won''t explore here) have preferred just three elements in what has come to be known as the classic trinity; reputation, misrepresentation and damage.

We should also note that is not necessary to have a place of business in Australia or to sell goods here, but it is necessary for a plaintiff to have managed to establish a reputation. This is a question of fact in every instance. Once this has been established the plaintiff will then have to address the likelihood of deception to consumers and damage to reputation of the person or business has to be considered. As may be discerned this type of action does not lend itself as readily as an action for copyright infringement to facts in the present instance.

Misleading and Deceptive Conduct

As with copyright infringement the advantage of pleading this cause of action is that it brings in the jurisdiction of the Federal Court, but this time under the Competition and Consumer Act or CCA. The CCA has been since January 2011 what the Trade Practices Act 1974 was. The CCA contains provisions prohibiting the restrictive trade practices that cause or a cause damage to competition in markets such as resale price maintenance, misuse of market power and the formation of cartels.

The CCA also contains provisions designed to prevent trade practices involving conduct that is deceptive, misleading or unconscionable conduct or conduct that is likely to deceive or mislead. It also deals with unfair contractual terms and product liability. The provisions in the CCA dealing with these areas are called the Australian Consumer Law or ACL. The ACL has ensured (or is intended to ensure) consistency in the rights of consumers by bringing together in a single place a number of national, state and territory consumer protection laws.

A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

But what is misleading and deceptive conduct? Surprise, surprise, but ''misleading or deceptive'' is not defined in the Act, which means we have to rely on the case law for guidance. Fortunately, the case law goes with the dictionary definitions, thus ''deceive'' means to cause someone to believe what is false, to mislead as to a matter of fact, to lead into error, to impose upon, delude or take in. The most appropriate definition for the word ''mislead'' is ''to lead astray in action or conduct, to lead into error or to cause to err.'' (Oxford English Dictionary 2nd ed). Some of the cases looked to the reasoning and elements considered by the courts for the tort of passing off, but generally caution against doing so as there are no real limitations on what constitutes misleading and deceptive in the CCA itself.

The use of 'likely to' is given its usual meaning as well. Essentially it means there is a 'real not remote chance or possibility regardless of whether it is less or more than fifty per cent3. It has been noted that its use means that it is unnecessary to prove that the conduct in question actually deceived or misled anyone4.

Deceiving the General Public

It can be seen that section 18 does not actually have a requirement that a particular person be identified as having been deceived, or likely to be deceived, and as a consequence this has allowed the cases to encompass consumers generally, or rather a class of consumer. Gibbs J put it quite neatly in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd[1982] HCA 44 when considering section 18's precursor, section 52 of the Trade Practices Act when he said at paragraph 9:

Section 52 does not expressly state what persons or class of persons should be considered as the possible victims for the purpose of deciding whether conduct is misleading or deceptive or likely to mislead or deceive. It seems clear enough that consideration must be given to the class of consumers likely to be affected by the conduct. Although it is true, as has often been said, that ordinarily a class of consumers may include the inexperienced as well as the experienced, and the gullible as well as the astute, the section must in my opinion by regarded as contemplating the effect of the conduct on reasonable members of the class. The heavy burdens which the section creates cannot have been intended to be imposed for the benefit of persons who fail to take reasonable care of their own interests.

Moral Rights

Mention should also be made of moral rights. Composers and lyricists have moral rights in relation to their work. Moral rights are distinct from other rights in that they do not contain a financial or economic component. They include for example the right to be attributed for their work (although this does not usually occur in the advertising industry) and the right not to have their work treated in a derogatory way. The remedies for a successful breach of a moral rights action include damages (financial compensation) and injunctions (an order to prevent or stop a particular activity). Remedies for the more substantive breaches are considered below.

Remedies

Remedies under the CCA include, mandatory injunctions and interim injunctions (eg stop broadcasting that advertisement now - until a court gives a judgment deeming otherwise), declarations, damages, compensation orders and penalties, including civil pecuniary penalties. Damages are also available under the Copyright Act as is an ''account of profits'' if the court (and not the plaintiff) makes that election (s.115). With an advertisement during the Super Bowl purportedly costing upwards of $3 million dollars for half a minute, the potential damages could be quite a tidy sum indeed.

1. This article is concerned with remedies under Australia law, including the common law, which may be available and not those in the United States, although there will be equivalent rights and remedies available in that jurisdiction, eg under the Copyright Act 1976. The article is also not concerned with the 'Conflict of Laws' / 'choice of forum' issues - that is a huge topic of its own that we will be exploring in the future because in this world with its pervasive modern technology it will inevitably occur again and again.